UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA, SOUTHERN DIVISION

Transcription

1 0 LEWIS JON E. HOKANSON, SB# JOSEPHINE A. BROSAS, SB# West th Street, Suite 000 Los Angeles, California 00 Telephone:.0.0 Facsimile:.0.00 Attorneys for Plaintiff DEXCOWIN GLOBAL, INC. UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA, SOUTHERN DIVISION DEXCOWIN GLOBAL, INC., vs. ARIBEX, INC., Plaintiff, Defendant. CASE NO. COMPLAINT FOR DECLARATORY JUDGMENT OF PATENT NON-INFRINGEMENT AND INVALIDITY OF U.S. PATENTS,, and,, DEMAND FOR JURY TRIAL Trial Date: COMPLAINT None Set Plaintiff DEXCOWIN GLOBAL, INC. ( Plaintiff or Dexcowin ) alleges as follows for this Complaint for Declaratory Judgment of Patent Non-Infringement and Invalidity ( Complaint ) against Defendant ARIBEX, INC. ( Defendant or Aribex ): NATURE OF ACTION. This is an action for declaratory relief pursuant to Fed. R. Civ. P. and U.S.C. 0.. Dexcowin seeks a declaratory judgment that Dexcowin is not liable for infringement of properly construed, valid, and enforceable claims of U.S. Patent Nos.,, (the patent ) and,, (the patent ) (collectively, -0-.

2 0 Patents-in-Suit ) under U.S.C... Dexcowin also seeks a declaratory judgment that properly construed claims of one or both of the Patents-in-Suit are invalid under at least U.S.C.,, and/or.. On information and belief, Aribex is the owner by assignment of the patent which is entitled Digital X-Ray Camera and which issued on May, 00. A true and correct copy of the patent is attached hereto as Exhibit A.. On September, 0, an Ex Parte Reexamination Certificate was issued after reexamination of the patent. A true and correct copy of the certificate is attached hereto as Exhibit B.. On information and belief, Aribex is the owner by assignment of the patent, which is entitled Portable X-Ray Device and which issued on February, 00. A true and correct copy of the patent is attached hereto as Exhibit C.. This action arises out of allegations by Aribex that Dexcowin imports and sells products that infringe the Patents-in-Suit, as alleged more fully below. PARTIES. Dexcowin is a California corporation with a principal place of business at N. Lake Avenue, Suite 00, Pasadena, California.. Since 00, Dexcowin has developed and produced mobile X-ray and digital solutions for the dental, medical, veterinary, inspection and security markets.. On information and belief, Aribex is a Utah corporation, with its principal place of business at South, 00 East Orem, Utah 0. Based on information provided on Aribex s website at on information and belief, Aribex also has corporate offices located at Fruehauf Drive, Charlotte, North Carolina.. On information and belief Aribex develops, manufactures, and markets devices in the x-ray radiography fields. -0-.

3 0 JURISDICTION AND VENUE. This Court has subject matter jurisdiction over Dexcowin s claims asserted herein pursuant to U.S.C. and (a) because those claims arise under the patent laws of the United States, U.S.C., et seq., and under the Federal Declaratory Judgment Act, U.S.C. 0 and 0. As alleged more fully below, there is a substantial controversy of sufficient immediacy and reality between Dexcowin and Aribex regarding non-infringement and invalidity of the Patents-in-Suit to warrant the issuance of a declaratory judgment.. This Court has personal jurisdiction over Aribex. On information and belief, Aribex has purposely availed itself of the privilege of conducting activities in the State of California and in this District. On information and belief, Aribex, directly and through intermediaries such as distributors, sells, offers for sale, advertises, ships and/or distributes products such as X-ray devices in the State of California and in this District. On information and belief, Aribex has purposely directed its products to the State of California with the expectation that those products will be purchased by customers in this District.. As alleged more fully below, Aribex has purposely directed its patentinfringement threats and accusations in regard to the Patents-in-Suit at Dexcowin, which maintains a principal place of business in this judicial district. This declaratory judgment action arises out of Aribex s threats, accusations, and attempts, to enforce the Patents-in-Suit against Dexcowin, a resident in this judicial district.. Venue is proper in this judicial district pursuant to U.S.C. (b) and (c). BACKGROUND AND EXISTENCE OF ACTUAL CONTROVERSY. On or about June, 0, Mr. Michael A. Fisher, the Chief Intellectual Property Counsel for Kavo Kerr Group, wrote to Dexcowin s thencounsel, Mr. William E. Curry. Mr. Fisher sent the letter on behalf of Aribex. On -0-.

4 0 information and belief, Kavo Kerr Group acquired Aribex in or about November 0.. According to Aribex s June 0 letter, Aribex owns a number of patents in the U.S. (and other countries), which include the Patents-in-Suit. According to the letter: It has come to our attention that your client DEXCOWIN continues to import and sell products that infringe some or all of these patents, including but not limited to its iray D (a/k/a DX000) and MaxRay handheld X- ray systems.. Aribex s June 0 letter then demanded that Dexcowin, including its agents and distributors, cease and desist from making, selling, offering for sale, or importing allegedly infringing products, including the iray D, the MaxRay products. The letter further requested that Dexcowin inform Aribex when the products have been withdrawn from the market.. On or about October, 0, Mr. Fisher, again on behalf of Aribex, sent a letter to Mr. Curry, following up on the June 0 letter and referenced an October, 0 voice mail he had left for Mr. Curry. 0. On or about October, 0, Mr. Fisher, on behalf of Aribex, sent a letter to Archer Dental, Inc. ( Archer ), alleging that Archer was selling products, such as the MaxRay product, that infringed one or more of Aribex s patents (which include the Patents-in-Suit), and demanding that Archer cease and desist from making, selling, offering for sale, or importing the MaxRay product and other alleged infringing products. The letter further requested that Archer inform Aribex when the products have been withdrawn from the market.. On or about October, 0, Mr. Fisher, on behalf of Aribex, sent a letter to Vector R&D ( Vector ), alleging that Vector was selling products, such as the MaxRay product, that infringed one or more of Aribex s patents (which include the Patents-in-Suit), and demanding that Vector cease and desist from making, selling, offering for sale, or importing the MaxRay product and other alleged -0-.

5 0 infringing products. The letter further requested that Vector inform Aribex when the products have been withdrawn from the market.. On October, 0, Dexcowin s counsel sent a letter to Mr. Fisher, responding to the above-referenced cease and desist letters to Dexcowin, Vector, and Archer. This letter requested that Aribex provide for each of the patents being asserted (including the Patents-in-Suit), the identity of which claim(s) Aribex contended was/were being infringed, the identity of each and every product Aribex contended was infringed and an explanation of why or how each such claim was infringed. The letter also inquired whether Aribex was interested in licensing its patents, and if so, requested that Aribex provide the general terms for such a license.. On or about October, 0, Mr. Fisher, on behalf of Aribex, sent a letter to Darby Dental Supply, LLC ( Darby ), alleging that Darby was selling products, such as the MaxRay product, that infringed one or more of Aribex s patents (which include the Patents-in-Suit), and demanding that Darby cease and desist from making, selling, offering for sale, or importing the MaxRay product and other alleged infringing products. The letter further requested that Darby inform Aribex when the products have been withdrawn from the market.. On November, 0, having no reply from Aribex, Dexcowin s counsel sent a letter and to Mr. Fisher, following up on the October, 0 letter, and referencing the cease and desist letter sent by Aribex to Darby on October, 0. The November letter again requested the same information requested in the October, 0 letter, and again, requested whether Aribex was interested in licensing its patents.. On November, 0, Mr. Fisher, on behalf of Aribex, responded to Dexcowin s letters, alleging continued infringement of Aribex patents, and providing a set of claim charts purporting to show how Dexcowin products, such as the MaxRay product, infringe several exemplary claims of the Patents-in-Suit. Aribex requested a responsive claim chart (e.g., non-infringement and/or invalidity) -0-.

6 0 by no later than December, 0, and noted that Aribex was not interested in licensing its patents at that time.. Dexcowin contends that it has not infringed and is not infringing properly construed, valid, and enforceable claims of the Patents-in-Suit, either literally or under the doctrine of equivalents.. Dexcowin further contends that properly construed claims of the Patents-in-Suit are invalid for failure to comply with the requirements for patentability of, inter alia, U.S.C.,, and/or.. By virtue of Aribex s statements directed at Dexcowin and third parties regarding Dexcowin s handheld X-ray products, including but not limited to the iray D (or the DX 000) and MaxRay handheld X-ray devices, there is an actual and substantial controversy between Aribex and Dexcowin regarding Dexcowin s liability for infringement of the Patents-in-Suit with respect to such products, including other, handheld X-ray products such as the DX 000 and DX 000 X-ray products. There is also an actual and substantial controversy between Aribex and Dexcowin regarding the validity of the Patents-in-Suit.. The facts alleged herein show that an actual, substantial and justiciable controversy exists between Aribex and Dexcowin, parties having adverse legal interests, regarding the validity and alleged infringement of the Patents-in-Suit, and this controversy is of sufficient immediacy and reality to warrant the issuance of declaratory judgment under U.S.C. 0(a). DEXCOWIN S PETITIONS FOR INTER PARTES REVIEW OF THE PATENTS-IN-SUIT 0. On January, 0, Dexcowin filed a petition for inter partes review of certain claims of the patent before the United States Patent and Trademark Office Patent Trial and Appeal Board, which has been assigned Case Number IPR On January, 0, Dexcowin filed a petition for inter partes review -0-.

7 0 of certain claims of the patent before the United States Patent and Trademark Office Patent Trial and Appeal Board, which has been assigned Case Number IPR Pursuant to U.S.C. (a)(), because Dexcowin filed the instant civil action after it filed its petitions for inter partes review, the instant civil action shall be automatically stayed until either: (A) the patent owner moves the court to lift the stay; (B) the patent owner files a civil action or counterclaim alleging that the petitioner or real party in interest has infringed the patent; or (C) the petitioner or real party in interest moves the court to dismiss the civil action. FIRST CAUSE OF ACTION (Declaratory Judgment of Non-Infringement - U.S. Patent No.,,). Dexcowin restates and incorporates by reference as if fully set forth herein the allegations of the foregoing paragraphs through.. Aribex has asserted and continues to assert that Dexcowin has infringed and continues to infringe Aribex patents, including the Patents-in-Suit, and in particular, the patent. Aribex has asserted and continues to assert that one or more of Dexcowin s handheld X-ray products, including but not limited to the iray D (or the DX 000) and MaxRay handheld X-ray devices, infringe the Patents-in- Suit.. On information and belief, Dexcowin has never infringed and is not currently infringing, whether directly or indirectly; contributorily or by inducement; or literally or under the doctrine of equivalents, any valid claim of the patent, with respect to one or more of Dexcowin s handheld X-ray products, including, inter alia, the iray D (or the DX 000), the MaxRay handheld X-ray devices, and the DX 000 and DX 000 X-ray devices. Dexcowin disputes that it has infringed properly construed, valid, and enforceable claims of the patent.. Therefore, an actual and substantial controversy exists between Dexcowin and Aribex, parties having adverse legal interests, of sufficient -0-.

8 0 immediacy and reality to warrant the issuance of a declaratory judgment that Dexcowin has not infringed and does not infringe any properly construed, valid, and enforceable claim of the patent, in particular, with respect to one or more of Dexcowin s handheld X-ray products, including, inter alia, the iray D (or the DX 000), the MaxRay handheld X-ray devices, and the DX 000 and DX 000 X-ray devices.. Dexcowin requests a judicial determination and declaration of its rights, duties, and obligations with respect to the patent. Such a determination and declaration is necessary and appropriate to enable the parties to ascertain their respective rights and duties relative to the patent. SECOND CAUSE OF ACTION (Declaratory Judgment of Non-Infringement - U.S. Patent No.,,). Dexcowin restates and incorporates by reference as if fully set forth herein the allegations of the foregoing paragraphs through.. Aribex has asserted and continues to assert that Dexcowin has infringed and continues to infringe Aribex patents, including the Patents-in-Suit, and in particular, the patent. Aribex has asserted and continues to assert that Dexcowin s handheld X-ray products, including but not limited to the iray D (or the DX 000) and MaxRay handheld X-ray devices, infringe the Patents-in-Suit. 0. Dexcowin also has never infringed and is not currently infringing, whether directly or indirectly, contributorily or by inducement, or literally or under the doctrine of equivalents, any valid claim of the patent with respect to one or more of Dexcowin s handheld X-ray products, including, inter alia, the iray D (or the DX 000), the MaxRay handheld X-ray devices, and the DX 000 and DX 000 X-ray devices. Dexcowin disputes that it has infringed properly construed, valid, and enforceable claims of the patent.. Therefore, an actual and substantial controversy exists between Dexcowin and Aribex, parties having adverse legal interests, of sufficient -0-.

9 0 immediacy and reality to warrant the issuance of a declaratory judgment that Dexcowin has not infringed and does not infringe any properly construed, valid, and enforceable claim of the patent, in particular, with respect to Dexcowin s handheld X-ray products, including, inter alia, the iray D (or the DX 000), the MaxRay handheld X-ray devices, and the DX 000 and DX 000 X-ray devices.. Dexcowin requests a judicial determination and declaration of its rights, duties, and obligations with respect to the patent. Such a determination and declaration is necessary and appropriate to enable the parties to ascertain their respective rights and duties relative to the patent. THIRD CAUSE OF ACTION (Declaratory Judgment of Invalidity - U.S. Patent No.,,). Dexcowin restates and incorporates by reference as if fully set forth herein the allegations of the foregoing paragraphs through.. Aribex has asserted and continues to assert that Dexcowin has infringed and continues to infringe Aribex patents, including the Patents-in-Suit, and in particular, the patent. Aribex has asserted and continues to assert that Dexcowin s handheld X-ray products are infringing, including but not limited to the iray D (or the DX 000) and MaxRay handheld X-ray devices, infringe the Patents-in-Suit.. Dexcowin disputes that it has infringed or that it continues to infringe, properly construed, valid, and enforceable claims of the Patents-in-Suit, and affirmatively alleges that the claims of the patent are invalid for failure to meet one or more of the requirements for patentability under inter alia, U.S.C... Therefore, an actual and substantial controversy exists between Dexcowin and Aribex, parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment that the properly construed claims of the patent are invalid for failure to meet one or more of the requirements for patentability under inter alia, U.S.C

10 0. Dexcowin requests a judicial determination and declaration of its rights, duties, and obligations with respect to the patent. Such a determination and declaration is necessary and appropriate to enable the parties to ascertain their respective rights and duties relative to the patent. FOURTH CAUSE OF ACTION (Declaratory Judgment of Invalidity- U.S. Patent No.,,). Dexcowin restates and incorporates by reference as if fully set forth herein the allegations of the foregoing paragraphs through.. Aribex has asserted and continues to assert that Dexcowin has infringed and continues to infringe Aribex patents, including the Patents-in-Suit, and in particular, the patent. Aribex has asserted and continues to assert that Dexcowin s handheld X-ray products are infringing, including but not limited to the iray D (or the DX 000) and MaxRay handheld X-ray products, infringe the Patents-in-Suit. 0. Dexcowin disputes that it has infringed or that it continues to infringe, properly construed, valid, and enforceable claims of the Patents-in-Suit, and affirmatively alleges that the claims of the patent are invalid for failure to meet one or more of the requirements for patentability under inter alia, U.S.C., and/or.. Therefore, an actual and substantial controversy exists between Dexcowin and Aribex, parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment that the properly construed claims of the patent are invalid for failure to meet one or more of the requirements for patentability under inter alia, U.S.C., and/or.. Dexcowin requests a judicial determination and declaration of its rights, duties, and obligations with respect to the patent. Such a determination and declaration is necessary and appropriate to enable the parties to ascertain their -0-.

11 0 respective rights and duties relative to the patent. PRAYER FOR RELIEF WHEREFORE, Dexcowin respectfully request the Court to enter judgment in Dexcowin s favor as to all claims asserted in this Complaint and, specifically, to enter judgment: A. Declaring that Dexcowin is not liable for any infringement of any properly construed, valid, and enforceable claim of the patent; B. Declaring that Dexcowin is not liable for any infringement of any properly construed, valid, and enforceable claim of the patent; C. Declaring that one or more claims of the patent are invalid; D. Declaring that one or more claims of the patent are invalid; E. Enjoining Aribex, its officers, owners, partners, employees, agents, parents, subsidiaries, attorneys, and anyone acting in concert or participation with any of them from making any claim that Dexcowin infringes the patent, or that Dexcowin s handheld X-ray products, including, inter alia, the iray D (or the DX 000), the MaxRay handheld X-ray products, and the DX 000 and DX 000 X-ray products, infringe the patent; F. Enjoining Aribex, its officers, owners, partners, employees, agents, parents, subsidiaries, attorneys, and anyone acting in concert or participation with any of them from making any claim that Dexcowin infringes the patent, or that Dexcowin s handheld X-ray products, including, inter alia, the iray D (or the DX 000), the MaxRay handheld X-ray products, and the DX 000 and DX 000 X-ray products, infringe the patent; G. Finding that this case is exceptional pursuant to U.S.C., entitling Dexcowin to an award against Aribex of Dexcowin s reasonable attorneys fees; -0-.

12 0 H. Awarding to Dexcowin its costs and disbursements; and I. Awarding to Dexcowin such other and further relief as this Court deems just and proper. DEMAND FOR JURY TRIAL Pursuant to Fed. R. Civ. P. (b) and L.R. -, Dexcowin hereby demands a trial by jury on all issues so triable. DATED: January, 0 JON E. HOKANSON JOSEPHINE A. BROSAS LEWIS By: /s/ Jon E. Hokanson Jon E. Hokanson Attorneys for Plaintiff DEXCOWIN GLOBAL, INC. -0-.